Articles

“In the process of globalization, promotion of goods for export to foreign markets and accessing new markets are being paid more attention and focus by businesses. In order to protect themselves in the international markets, more and more enterprises are showing interest in protecting trademarks of goods and services in foreign markets, which is really necessary for the enterprise. This is also one of the prerequisites for the enterprise’s goods to be freely circulate in foreign markets without being considered as acts of infringement of trademark ownership of other enterprises.”

1. What is a trademark?

Firstly, we have to look at how trademarks should be understood to determine its importance in the commercial operation of the business.

A trademark is understood as a characteristic, memorable, and distinguishable sign of a certain group of goods and services produced by individuals, organizations or businesses for consumers. 

Thanks to the trademarks, consumers can quickly remember products and goods of a particular company/organization, letting them form an impression in their minds about the quality, reliability, and main benefits of such goods and services that the manufacturer wishes to convey to them. This makes trademarks have a direct connection to the formation of customer habits pertaining to consumption of certain types of goods and services.  

2. Domestic enterprises with registered trademark and their protection in the international market.

In the Vietnamese market, there are now many domestic enterprises that have used and promoted trademarks to consumers and carried out the necessary registration procedures to protect such trademarks in accordance with Vietnamese laws. This helps enterprises to protect their rights against competitors, and enables them gradually shape the core values, beliefs, and differences among various goods and services in the minds of consumers.

However, in international markets, the protection of trademarks of enterprises has not been paid enough attention yet. In fact, very few enterprises take action to protect their trademarks abroad. This practice is mainly seen in some large enterprises. Some other enterprises only export without focusing on trademark protection.

There have been many reputable trademarks of Vietnamese enterprises that cannot be registered or protected abroad. This is because the registration procedures are not carried out or delayed as a common practice in those markets. In addition, other objective factors affecting protection of the trademarks are the differences in the legal systems of different countries and the application of principles such as ‘first to file’ etc. Thus, distribution partners or agents in such export markets register and obtain protection certificates by themselves. As a result, Vietnamese enterprises have to bear a lot of costs to negotiate for retaining the trademark or they might lose their trademarks in foreign markets even when the exported goods and products are recognized and trusted by consumers in that market.

3. In order to carry out the international registration of trademarks in foreign markets, enterprises should pay attention to:

Identifying key markets of enterprises and types of goods and services that are typical of that market:

Before registering a trademark, the enterprise needs to identify key markets for exporting its goods. Accordingly, enterprises can zone and determine the number of countries that need prioritization to carry out procedures for international registration of trademarks. For potential future markets, businesses may consider expanding protection registration to the next stages. Besides, businesses also need to identify trademarks representing the group of goods / services provided in each given country.

Choosing how to register for protection, currently enterprises often consider the following 02 options for registering and protecting trademarks in different countries around the world including (i) Registering directly in the country which is a key market for exporting goods and where the trademark needs to be protected, and (ii) International registration of trademarks through the Madrid system. Since each option has its own advantages and bottlenecks, enterprises should carefully consider and decide what best suits their business.

Registration directly in the country of exporting goods

In case of direct trademark registration in the countries where goods are being exported, the enterprise should contact the industrial property representatives or intellectual property lawyers to initially check the trademark and registration procedure in the host country. Here, in addition to the cost of administrative procedures for trademark registration at the Intellectual Property Agency of that country, the enterprise also needs to pay lawyer(s)’ fees and representative(s)’ fees in each country. This applies if the enterprise only plans to register trademark in only one country or in countries which is not a member of the Madrid Protocol or Madrid Agreement.

International registration of trademarks through the Madrid system

The Madrid system, which is an international registration system, offers businesses a convenient solution for application methods and cost savings when enterprises wish to register for trademark protection in many different countries at the same time. In order to internationally register a trademark through the Madrid system, the enterprise needs to perform the following steps:

• Identifying typical trademarks to be registered in the Vietnamese market and the countries which are key overseas markets of enterprises.
• Initial lookup of trademarks at the digital library of the Intellectual Property Office of Vietnam and WIPO to find out which trademarks are coincidental or similar to those expected to be registered by the enterprises among the same or related groups of products and services. Thus, enterprises can decide on appropriate trademarks for registration and protection.
• Register trademarks in Vietnam (if registration procedure has not been performed yet).
• Prepare documents in accordance with the regulations and submit dossiers at the international registration office of the Intellectual Property Office of Vietnam to transfer the dossier to WIPO’s registration office. Enterprises are not allowed to directly apply at WIPO’s registration office under the Madrid system.

We can see that the Madrid system can bring a lot of benefits to businesses such as- Saving time and costs while registering and managing the trademark of the business in different countries, removing language barriers, minimizing the costs of translation and attorney’s fees, minimizing the cost of industrial property representation fees when enterprise registers directly in other countries. Also, the applicant can use one language in a set of applications. It is possible to expand the scope of application and protection when the enterprise plans to expand the export of goods and services and enter a new market in the near future.

In summary, in order to protect trademarks around the world, enterprises can consider and choose the method of trademark protection in accordance with their individual business plans and needs. For each method, enterprises need to check the feasibility of the trademark expected to be registered for protection, which helps them to eliminate the costs due to rejection as well as helps in preparing for appropriate adjustments.

Writing time: 31/05/2021

The article is based on applicable law at the time noted above and may no longer be relevant at the time the reader approaches this article due to the change in applicable law and the specific case in which the reader wishes to apply. Therefore, the article has only reference values.

Source: plf.vn